Monthly Archives: October 2016

Social media, adverse publicity and just cause

The Clark County, Ohio Sheriff’s office is responsible for County wide law enforcement and operates the county jail. The jail shares a building with the Springfield police department with a common lobby between the two. Grievant was one of two Sheriff’s Office Sergeants on duty at the jail on May 13, 2015. On that evening a former deputy, who had been fired for alcohol related misconduct, entered the lobby. While there was some dispute about his initial condition he became increasingly inebriated as the evening progressed. The former deputy approached the window of the Sheriff’s office and asked to speak with a Sergeant. One of the Sergeants on duty (not the grievant) responded. The former deputy claimed there was an incident down the street requiring attention, but could not provide any details. After being advised that there was nothing that could be done without additional information. Nevertheless the former deputy remained in the lobby, at one point lying next to the door. The responding Sergeant notified the Springfield police that the former deputy was in the lobby but instructed her deputies to leave him alone.

Approximately a half hour later an individual entered the lobby to turn himself in on an outstanding warrant. This individual recognized the former deputy from a prior jail stay and began videoing him on his phone. His recording showed the former deputy stumbling severely and urinating in the lobby. After the individual left then office he posted his recording on Facebook and contacted the local media to report what he had observed.

The following morning the Sheriff was faced with numerous media accounts of the incident and the Facebook posting and spent considerable time responding to media inquiries. He also asked the County prosecutor to conduct an investigation to determine if criminal charges against any Sheriff’s Department employees were warranted.

After an investigation the prosecutor recommended the pursuit of misdemeanor charges against the  sergeant who first interacted with the former deputy and who directed the staff to leave him alone. The Sheriff decided not to pursue criminal charges but conducted an internal investigation. That investigation resulted in the termination of three sergeants, the responding sergeant, the grievant and a sergeant who came on duty while the former deputy was still in the lobby. All of the terminations were grieved. The termination of the responding sergeant was upheld (Termination upheld for fired Clark Co. sheriff’s sergeant). A hearing on the termination of the third sergeant has not yet been held. Arbitrator Tobie Braverman addressed the termination of the second.

Arbitrator Braverman concluded that the evidence supported a charge of conduct unbecoming, neglect of duty and unsatisfactory performance. She concluded that she should have, at a minimum, questioned the other Sergeant’s decision to let the former depart remain in the lobby and should have called someone to check on the former deputy’s mental state and possible need for assistance.  As to the penalty, however, Arbitrator Braverman concluded that termination was too severe. She addressed the impact of the negative publicity caused by the posting of the video to Facebook, but found this by itself insufficient to support termination. She observed:

Having determined that the Grievant committed the offense with which she is charged, the remaining question is that of whether the penalty meted out for her offense is appropriate in the circumstances present in this case. There can be no doubt that the decision to terminate the Grievant was influenced in significant part by the fact that video of the incident was posted on Facebook and covered by local media. This clearly reflected poorly on the Employer. It resulted in accusations of both favoritism, since [ ] was a former deputy, and indifference due to the lack of concern for his safety and that of the public. The publicity, however, cannot be the sole determinant in assessing the propriety of the discipline to be meted out to the Grievant. In this day and age when virtually everyone has a video camera in his pocket, it must be presumed that there is a real and present possibility that the events are being recorded and that those recordings will be posted to social media. While it is important that law enforcement personnel in particular be mindful of this fact, the mere fact of the additional attention cannot exclusively drive the penalty for misconduct.

In light of grievant’s seventeen year discipline free history, and the principle of progressive discipline, the arbitrator ordered grievant’s reinstatement without back pay. WDTN reports on the decision, and Arbitrator Braverman’s award can be found here.

Source: ADR

How is third-party funding affecting arbitration?

Third-party funding has had a significant impact on litigation in recent years as corporates and law firms seek to control their risk profile while accessing capital that might otherwise be tied up for long periods.

At a recent Q&A session, organised by law firm Norton Rose Fulbright, leading players in funding set out how international arbitration is being affected by the availability of alternative funding mechanisms.

The growth of third-party funding

Asked about emerging trends, Ruth Stackpool-Moore, director of litigation funding and head of Hong Kong at Harbour Litigation Funding, explained the rapid changes she is seeing: “The past 12 months have seen further exponential growth in the use of third-party funding generally and, particularly, an increase in the number of enquiries regarding arbitrations.

Source: JAMS ADR

EUIPO and EPO Release Updated IPR Intensive Industry and Economic Performance Report


On October 25, 2016, the European Union Intellectual Property Office (EUIPO) and the European Patent Office (EPO) released an update to their joint 2013 report on the impact of intellectual property rights (IPR) intensive industries on the economic performance in the European Union. The previous 2013 report which covered the period from 2008-2010, found that IPR intensive industries accounted for 39% of the EU’s economic output and 20% of employment. The 2016 report which covers the period of 2011-2013, takes into account new updates within the EU such as the accession of Croatia in 2013 and includes new IPR in plant varieties and in climate change mitigation technologies (CCMTs).

The report found that IPR intensive industries generated 27.8% of all jobs in the EU which translates into 60 million Europeans being employed by IPR intensive industries. Additionally, 22 million jobs were generated in industries that supply goods and services to these industries, which indirectly means that the total number of IPR dependent jobs is 82.2 million. Over the same period, IPR intensive industries generated more than 42% of total GDP, with a value of €5.7 trillion. The report also found that IPR intensive industries were less affected by the economic crisis. In the EU from 2008-2010 compared to 2011-2013, there was a fall of 1.7% in the employment rate, while the fall in employment in IPR intensive industries was only 1%. 

In 2013, the EU as a whole had an overall trade deficit in 2013 of approximately €42 billion. However, that year, it had a trade surplus of €96 billion with the rest of the world in IPR intensive industries. In trademark-intensive industries, the report found that there were €1,275,472 million in exports with €1,261,002 million in imports. Trademark-intensive industries had a direct employment of 45,789,224 people (21.2% of total direct employment) and a total, direct and indirect employment of 65,486,334 people (30.3% of total employment) with a GDP of €4,814,310 (35.9% share of total EU GDP). Trademark-intensive industries contribute to the largest share of employment, followed by industries that use all three (trademark, design and patent) industries simultaneously. 

The report also provides a breakdown of contributions to employment and GDP by industry and includes a list of the top 20 IPR intensive industries making the largest contribution to employment. Trademark industries were found to be in eight of the top ten industries contributing to employment in the EU. 

The United States Patent & Trademark Office (USPTO) also released a report on Intellectual Property and the U.S. Economy in September 2016. Click here to read the full report. 

A copy of the full report EUIPO/EPO report can be found here

Published: 10/28/2016 6:02 AM
BlogTag: Europe; Anticounterfeiting

Source: TM NEWS

News story: Responding to trade mark examination letters

The services affected are

  • response to trade mark examination letter
  • response to Right Start trade mark examination letter

The changes are only to improve the appearance of these services.

They will take effect on 3 November 2016.

Please note

If you have a draft reply saved in progress (saved for later), then you must submit it by 2 November 2016. Following this date, any draft replies saved on the current version of either service, will no longer be available.

The method for accessing these services will remain the same (via the examination letter).

From 03 November 2016, the first screen of the service will resemble one of the following;

Example screenshot: response to trade mark examination letter

screen shot of response letter

Example screenshot: response to Right Start trade mark examination letter

Screen shot of response to right start letter

Source: UK IPO News

News story: Call for views: Modernising the European copyright framework

On 14 September 2016 the European Commission published draft legislation aimed at modernising the European copyright framework. This legislation includes:

  • a draft Regulation and Directive implementing the Marrakesh Treaty for the benefit of visually impaired people. This is intended to ensure that people who are visually impaired or otherwise print disabled are better able to access copyright content in accessible formats
  • a draft Regulation on the exercise of copyright and related rights in certain online transmissions by broadcasting organisations and retransmissions of television and radio programmes
  • a draft copyright Directive covering a range of measures aimed at

    (i) adapting exceptions and limitations to the digital and cross-border environment
    (ii) ensuring wider access to copyright content
    (iii) achieving a well-functioning marketplace for copyright

The Commission press release: has said:

“Digital technologies are changing the way music, films, TV, radio, books and the press are produced, distributed and accessed. New online services such as music streaming, video-on-demand platforms and news aggregators have become very popular, while consumers increasingly expect to access cultural content on the move and across borders. The new digital landscape will create opportunities for European creators as long as the rules offer legal certainty and clarity to all players. As a key part of its Digital Single Market strategy, the Commission has adopted proposals today to allow:

  • better choice and access to content online and across borders
  • improved copyright rules on education, research, cultural heritage and inclusion of disabled people
  • fairer and sustainable marketplace for creators, the creative industries and the press”

The government is seeking views on the draft legislation to ensure that it delivers the best outcomes for all those affected by the measures. We would welcome your views on the costs and benefits of these proposals, and suggestions for how the language of the proposed legislation can be improved. We would also welcome views on the possible impacts the legislation may have in light of the UK’s planned exit from the European Union.

Any views should be supported by evidence that is open and transparent in its approach and methodology. The Intellectual Property Office has published a Guide to Evidence for Policy which lays out the Government’s aspiration that evidence used to inform public policy is clear, verifiable and able to be peer-reviewed.

Please send your views to the following email address:
by 6 December 2016.

Source: UK IPO News

Speech: Baroness Neville-Rolfe’s speech at the ACG IP conference

Good morning everyone. I’m very pleased to be here in the flesh today. Last year my appearance was by video alone, but for a conference on counterfeiting it only seems right that this year you should see the original, rather than a reproduction.

According to estimates from the EU Intellectual Property Office (EUIPO), as much as 5% of goods in European markets are copies. That represents millions of pounds diverted to criminal elements, a drop in overall quality of goods, and a drop in consumer confidence.

This government won’t stand by. We are committed to building an economy that works for all, an economy based on fair play under a fair set of rules. That means an economy on the side of businesses, workers and consumers. That’s why we have made IP crime a priority. We are committed to protecting rights holders, legitimate retailers and customers up and down the country, and to stopping those who exploit others by breaking the law.

With these goals in mind the Intellectual Property Office (IPO) has set out the government’s strategy for the next four years, publishing “IP Enforcement 2020”, highlighting our goals, and the ways government and business can work together to achieve them.

We have three core ambitions against which we will measure our success. We want to:

  • empower UK companies of all sizes to feel more confident in operating internationally through better IP protection
  • educate consumers and users in the benefits of respecting IP rights, and the repercussions of law breaking; and
  • ensure that rights-owners have easy access to effective dispute resolution

The government support the Anti-Counterfeiting Group (ACG), and look to you to bring forward initiatives to help us fight IP crime. Earlier this year the ACG produced its 2016 manifesto.

The first thing the ACG asked for was support in the fight against fakes, calling on the government to give attention to the growing international trade in counterfeit goods.

The IPO is already developing ways to measure the damage IP crime does so that we can provide hard evidence and focus resources.

Next, we were urged to take a firmer stance on IP enforcement by developing a national body capable of working across local authorities and other agencies to create a pool of expertise and intelligence, so that we can fight IP crime effectively wherever it occurs.

This is an interesting proposal and I look forward to hearing more about this as you consult the wider IP enforcement to further develop this idea.

Lastly, there was a desire to make improved IP enforcement a serious priority across government, and to make our approaches smarter. We are bringing in business to be part of the solution, working together to raise awareness of the dangers and costs of the trade in counterfeit goods.

IP crime hurts consumers and businesses alike so I am fully supportive of the important work of the Anti-Counterfeiting Group helping businesses large and small tackle this issue.

IP criminals across the country are already finding out how effective our collective efforts can be, and I think it’s worth giving you an update on what we’ve already done in the last few months.

The first challenge is the amount of illegal goods and content that can be found online.

In keeping with our quick-access, consumer-led world, ease of access is often cited by consumers as a reason for illegal downloads.

This is why modern streaming services, such as Netflix and Spotify, have already helped to put a dent in the pirates’ profits. These services make it far easier for consumers to legally access content whilst guaranteeing security and quality, something which illegal downloads could never do.

Counterfeit goods are widely available to order, and there are a vast number of retailing sites which support this trade. We recognise this threat and are acting to stop it. Last year alone Nominet removed over 3,500 websites that were linked to criminal IP activity.

Many of these sites have received a boost from genuine companies paying for advertising space, adding funds to criminal accounts while giving their sites a gloss of legitimacy.

The Police IP Crime Unit (PIPCU) are working to combat this, and in 2013 launched the Infringing Website List, an online register of copyright infringing sites for companies to avoid. Since then, we have seen a 73% drop in advertising on these sites by the UK’s top ad spending companies, further reducing criminals’ incomes and influence, which in turn benefits legitimate companies of all sizes.

This close working relationship with search engines and advertisers also includes social media providers. Together we are making progress in undermining and removing websites and profiles that distribute infringing materials.

Central to this has been Operation Jasper, a nationwide multi-agency operation built on the work of ACG members. Jasper’s objective is to remove counterfeit goods from social media sites. With the help of Facebook and Twitter we have now seen around 100 investigations launched, 59 separate warrants issued, and more than 8000 illegal listings removed from Facebook, as well as thousands of seizures of counterfeit goods. I’m sure we can expect similar achievement with Jasper 4, which I know you are launching soon.

Most stakeholders believe that the UK already has an effective system in place and are willing to support it. Just this week, the Digital Economy Bill reached the committee stage in the Commons. When passed it will increase the maximum sentence for online copyright infringement from two years to ten years.

I know many of you will have questions about the future of our IP after we leave the EU. Whilst negotiations are on-going I can’t answer these questions. But I know the importance of ensuring that IP rights are considered in Brexit and in any future trade agreements, and that IP is given appropriate recognition. We also remain a committed member of EUROPOL, and through vigilance and enforcement we will continue to do all we can to ensure that European markets are protected from criminal interference.

These problems reach beyond Europe. A 2014 UK Trade and Investment survey found that one in four UK businesses were uncomfortable with the idea of entering overseas markets because of concerns about IP theft.

We know too that when criminals do access our IP they can cripple start-ups, damage small businesses and steal new ideas away from legitimate owners and markets. But in the digital age, these criminals can be anywhere in the world.

Only an international approach can put an end to IP infringement. As the ACG Manifesto highlights, almost 85% of counterfeit goods seized around the globe originate from China and Hong Kong. Add in Singapore, Turkey and India and you account for more than 90%.

Project Poise, surprisingly named, exists to address this. It gives us a way to reach beyond our borders to disrupt the supply chain before products even reach us. The framework it provides can be taken up by other organisations, such as the UN, EUROPOL and INTERPOL.

Our attachés in India, China, South East Asia and Brazil, who have so far provided support to over 6500 of our international businesses, and dedicated police IP crime unit which has been set up in India complements this. And there are plans for a PIPCU-style approach to advertising for illegal websites in Hong Kong.
International trade is part of British heritage, and we cannot let our ambitions be limited. That’s why we are engaging with our partners around the world, through the attachés, the Foreign and Commonwealth Offices and the Department for International Trade, British Business Councils and the many local institutions.

We have made it clear that IP crime leads to losses in tax and other receipts, supports organised crimes like people trafficking or drug trafficking, and it can also pose a physical threat to consumers with dangerous or faulty products made by the counterfeiters.

Knowledge of members of the public is our main supporters in this fight, and our long-term goal must be to change public attitudes to IP crime, so that its true repercussions are recognised by all consumers.
Too often UK consumers see IP crime as harmless, and decide that convenience trumps legality. So we need better coordination between government, industry and consumer bodies, and brands themselves.
For example, sites like “Find any film” and “Get it Right From a Genuine Site” aggregate sources of legal content so that users can find everything they want quickly and easily.

The more we understand about the motivations, scope and scale of IP infringement, the more we can do to prevent it. Such information will feed into future strategy, and our successes will be evaluated on an annual scoreboard, combining the available data on IP infringement, the latest information on economic impact and the outcomes of enforcement activity.

We are now developing a case database with the Ministry of Justice, and working with the Home Office to create subcategories within fraud, giving us specific data on Trademark, Design and Copyright infringements.

And we will continue to promote Citizens Advice, Action Fraud and Crimestoppers so that consumers and victims have a place turn when a crime takes place.

We are committed to sharing our knowledge with our hosts, the ACG. The ACG has rightly highlighted growing trends we need to tackle together, such as the strain on resources brands are facing because of counterfeiters, and the growing influence of organised crime groups.

Of course, we are all being asked to do more with less. That’s why the ACG’s achievements are impressive:

  • £4 million of counterfeit sports apparel seized in more than 25 raids
  • collaborations across the UK with Trading Standards, Police and Border Forces; and
  • awareness roadshows four times a year

Then there’s the progress in one of the UK’s counterfeiting hubs: Cheetham Hill in Manchester, the counterfeit capital of Europe. ACG surveillance has so far identified a 113% increase in infringing activity there, with nearly 70 shops selling counterfeit goods.

This has led to traders being evicted, and we are targeting and prosecuting 28 of the worst offenders. I have asked the IPO to publish a report, and am pleased that we are now seeing more coordinated action with more to come.

The partnership between Government, law enforcement, and business has had a major impact on IP crime. Together we will continue to track down and dismantle criminal organisations and networks that profit illegally from the hard work of others.

But there is still much to do. The government is committed to tackling IP crime wherever it exists, whether in Manchester or Macau, whether online or on the street.

Counterfeiting is not new, but it is evolving. Enforcement 2020 sets out our plans to stay ahead, with greater public understanding, better intelligence and tougher enforcement.

The ACG makes a huge contribution. It is an honour to work with you, and a pleasure to be here today.

Thank you.

Source: UK IPO News

USPTO Releases Intellectual Property and the U.S. Economy Report


The United States Patent & Trademark Office (USPTO) has issued a report entitled, “Intellectual Property and the U.S. Economy: 2016 Update.”  This report, which builds on their 2012 report, was produced in collaboration with several U.S. government offices, including the Economics and Statistics Administration’s Office of the Chief Economist. This report, using quantitative and qualitative methodology, including reviews of European studies, examined intellectual property’s (IP’s) direct effects on the global economy.   

The report notes the crucial role of trademarks in business, stating that “a trademark makes effective competition possible in a complex, impersonal marketplace by providing a means through which the consumer can identify products which please him and reward the producer with continued patronage.”  This assists global consumers as they seek to make decisions about products to buy or consume.

The report concludes that “‘IP-intensive’ industries continue to be a major, integral and growing part of the U.S. economy.”  The report researches all forms of intellectual property, but the research illustrates that “trademark-intensive industries are the largest in number and contribute the most employment with 23.7 million jobs in 2014,” which is an increase from 22.6 million in 2010.  The report notes that these trademark-intensive jobs are not evenly distributed across the country, but are focused on the east and west coasts, the rocky mountain region, and the midwest. INTA members are contributing positively to these numbers as brand owners of all sizes build and maintain their brand portfolio.  

The USPTO report’s data illustrates the integral role trademarks play in supporting the growth of the economy.  The report states that between 2010 and 2014, the share of the gross domestic product (GDP) attributed to trademark-intensive industries increased substantially and accounted for $6.1 trillion in value added in 2014 which is up from $4.5 trillion in 2010.  Additionally, IP-intensive industries played a key role in increasing the U.S. exports of goods.

It is evident from the study that the role of IP is crucial in building, sustaining, and expanding a global economy. This study provides helpful and insightful data for businesses of all sizes, government officials, policy makers, and those seeking to influence government decisions. Additionally, the study helps explain the important roles of trademarks to global consumers.

Click here to read the full report. 

Category: North America
Published: 10/25/2016 6:37 AM
BlogTag: USPTO

Source: TM NEWS

Open consultation: Section 73 Copyright Designs and Patents Act 1988

Following the Balance of Payments consultation carried out by the Department of Culture, Media and Sport (DCMS) in 2015, the government decided to repeal Section 73 of the Copyright, Designs and Patents Act 1998 (CDPA). Section 73 provides that the retransmission of the Public Service Broadcasters’ (PSBs) core channels (all BBC Channels, ITV1, and Channel 4 and 5’s core channels) via cable is exempt from copyright fees.

The DCMS consultation examined the relationship between platforms and PSBs. However, the government recognises that a new rights market will emerge as a result of the repeal of Section 73. This means that relationships between PSBs, cable providers and rights holders will change when Section 73 is repealed. As a result of the outcome of the DCMS consultation, this further consultation is needed to assess:

  • the potential future rights market
  • how copyright owners (e.g. scriptwriters, performers) in any underlying content in cable retransmissions may choose to administer their rights
  • whether transitional periods are required to help the market adapt to new licensing structures

Source: UK IPO News

Arbitrator’s duty to disclose and evident partiality

The City of Mason, Ohio and the Mason Professional Firefighters Union were parties to a dispute about the termination of a bargaining unit employee. After the arbitrator initially selected disclosed a potential conflict of interest, the parties selected another arbitrator from a list provided by FMCS.  The parties selected arbitrator Howard Tolley. Following a hearing Arbitrator Holly upheld the Union’s grievance and ordered the reinstatement of the grievant with back pay. He found that the City failed to conduct a fair, objective investigation and that it lacked substantial evidence of guilt. Together with his award, Arbitrator Tolley submitted an invoice. The signature block on the invoice identified him as the Executive Director of Unitarian Universalist Justice Ohio. The City maintained that this was the first time it became aware of the arbitrator’s position with the organization which, according to its mission statement, “organized justice seekers statewide to promote  education, service, and advocacy consistent with Unitarian Universalist liberal religious principles and to witness with and on behalf of marginalized groups and individuals.”

The City sought to set aside the award, arguing that the arbitrator had failed to disclose his employment with UUJO, that he was not qualified under the terms of the cba, and that it would not have selected him had it know of his position with the organization. The City claimed that these facts supported a claim of evident partiality, a basis to set aside the award. The magistrate hearing the City’s motion denied the request to vacate, and the City’s objections to that decision were overruled by the trial court.

On the City’s appeal, the Court of Appeals of Ohio reversed.  Relying in part on what it described as the seminal case on the issue of undisclosed background information (Commonwealth Coatings Corp. v. Continental Das. Co.) the  Court held

Based on our review, we find the facts and circumstances in the present case depart from normal procedures of arbitration significantly enough to find evident partiality. The record in this case establishes that Tolley’s involvement with UUJO is not indirect or trivial in the sense that he was an arms-length member of an organization supporting some social justice positions.

The record further supports the city’s position that they were prejudiced by the nondisclosure of this information. While UUJO aligns itself with many issues and causes, the record before the court does indicate the support of a number of positions that would be unacceptable to a party representing the management side of an arbitration decision. [footnote omitted]

Accordingly the Court vacated the award.

The Court’s decision in City of Mason v. Mason Professional Firefighters can be found here.

Source: ADR